WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis v. Mistoul Juliette
Case No. D2017-2058
1. The Parties
The Complainant is Natixis of Paris, France, represented by Inlex IP Expertise, France.
The Respondent is Mistoul Juliette of Sedan, France.
2. The Domain Name and Registrar
The Domain Name <natixis-cyberplus.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2017. On October 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a request for amendment sent by the Center, the Complainant filed an Amended Complaint on October 27, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2017.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on December 8, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On December 22, 2017, the Panel issued the Administrative Panel Procedural Order No. 1 to the Parties, the relevant text being reproduced below.
“The Panel has reviewed the submissions from the Parties in this case. Pursuant to paragraphs 10 and 12 of the UDRP Rules, the Panel issues the following order:
1. The Panel requests that the Complainant provide evidence of the Group BPCE’s valid and duly renewed rights on the CYBERPLUS trademarks.
2. The Panel requests that the Complainant justify the legal relationship between the Complainant and the Group BPCE.
The Complainant should submit the above-requested evidence and comments by the end of December 27, 2017.
The Decision due date is extended to at least January 3, 2018.”
On December 26, 2017, the Complainant filed a further submission and additional evidence in response to the Procedural Panel Order No. 1. This evidence consisted documents from the French Trademark Office (INPI) that confirmed that the Group BPCE is the rightful owner of the CYBERPLUS trademarks (see below) and that they are rightfully registered at the time of this procedure, and an organization chart proving the legal relationship between the Group BPCE and the Complainant.
The Respondent did not file any reply in response to the Administrative Panel Procedural Order No. 1.
4. Factual Background
The Complainant is a French corporate and financial services company, Natixis, formed in 1954. It is the corporate, investment and financial services arm of Groupe BPCE, France’s second-largest banking institution. It has more than 15,000 employees in 38 countries. It has won various awards for its services including Best Euro Lead Manager for Covered Bonds in 2013 and Label of Excellence Natixis Assurances by Dossiers de l’Epargne for the Assur-BP Habitat, Multipro and Protection Juridique contracts and the Solévia life insurance policy in 2014.
The Complainant owns several French, Community and International prior rights registered since 2006 composed of the term “Natixis”. In addition to the company name NATIXIS, registered in 1954, it owns several trademarks on the Natixis” sign, notably:
- French Trademark registration “NATIXIS, no. 3416315, of March 14, 2006;
- European Union Trademark registration NATIXIS, no. 5129176, of June 21, 2007; and
- International Trademark registration , no.1071008, of April 21, 2010.
(collectively, the “Trademarks”).
The Complainant also owns and maintains the following domain names which resolve to their official website:
<natixis.com>, of February 3, 2005; and
<natixis.fr>, of October 20, 2006.
The company BPCE owns the two following trademarks of the “CYBERPLUS” sign:
- French Trademark registration CYBERPLUS, no. 95575762, of June 14, 1995, duly renewed;
- International Trademark registration CYBERPLUS, no. 647939, of December 13, 1995, duly renewed.
The Domain Name was registered on January 24, 2017. It resolves to an error page on which the message “Address not found” can be read.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s NATIXIS Trademarks;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant argues that the Domain Name reproduces the NATIXIS and the CYBERPLUS signs which match the Complainant’s Trademarks and the Group BPCE’s trademarks, Group of which the Complainant is part of, thus the Complainant indicates that the Domain Name is a combination of two registered trademarks. Furthermore, aside of having no signification neither in French nor in English, the NATIXIS and CYBERPLUS signs are distinctive. Therefore, the Complainant argues that there is a likelihood of confusion between the Domain Name and the Complainant’s prior trademark rights.
The Complainant further argues that there are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name and it does not have any business or legal relationship with the Complainant, nor does the Respondent have any authorization from the Complainant to register the Domain Name or a domain name corresponding to the “NATIXIS” Trademarks. The Respondent is not using the Domain Name, which resolves to an error page. This constitutes prima facie evidence of the lack of rights or legitimate interests according to a precedent case (Natixis v. Sylvia Postler, WIPO Case No. D2015-0960).
The Complainant further argues that the Domain Name was registered and is being used in bad faith. It argues that the Domain Name was registered with the aim of taking advantage of the reputation of the Complainant’s NATIXIS well-known Trademarks as the NATIXIS Trademarks are well-known in France and in several other countries based on its good ranking on the search engine available at “www.google.com” and its international recognition due to the awards it has been granted. Therefore, the Complainant further argues that even though the Domain Name is not active, the passive holding of a disputed domain name does not prevent a finding of bad faith where the domain name has been registered and is used to take advantage of the reputation of the Complainant. The Complainant thus reminds the Panel of the following decision (Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574) in which it has been found that the reservation of domain names including well-known trademarks demonstrates the bad faith of the Respondent.
For all the above reasons, the Complainant requests the transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions and is therefore in default.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has submitted evidence of its prior rights on the NATIXIS sign in the form of Trademarks and domain names, evidence of the company BPCE’s prior right on the CYBERPLUS sign in the form of trademarks and, finally, evidence of the legal relationship between the Group BPCE and the Complainant.
The disputed domain name <natixis-cyberplus.com> consists of the combination of two registered trademarks: the Complainant’s NATIXIS Trademarks, together with the company BPCE CYBERPLUS’s trademarks. This is sufficient to find confusing similarity in the sense of the Policy. A number of WIPO UDRP Panels have considered domain names that consist of a complainant’s trademark and a third party’s trademark and have concluded that such domain names are confusingly similar to either trademark, see, e.g., Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142 and Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793.
Consequently, the Panel holds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent comes forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022.
The Respondent is not affiliated or connected to the Complainant in any way nor has it been authorized and licensed by the Complainant to register and use the Domain Name which incorporates the Trademarks. It does not appear to have any independent right to the Domain Name. There is no evidence that the Respondent is commonly known by the Domain Name. The Domain Name resolves to an error page, which does not correspond to a bona fide offering of goods or services nor, in the circumstances of this case, to a legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, calling for an answer from the Respondent. The Respondent has not filed a response and is therefore in default, thus, the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Pursuant to the Policy (paragraph 4(a)(iii)), The Complainant must show that the Respondent registered and is using the Domain Name in bad faith.
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the NATIXIS Trademarks at the time the Respondent registered the Domain Name. The Complainant has submitted evidence, which shows that the Respondent registered the Domain Name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the NATIXIS trademark since at least the year 2007. It is suggestive of the Respondent’s bad faith in these particular circumstances that the NATIXIS Trademarks, owned by the Complainant, were registered long before the registration of the Domain Name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735). The WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The “Natixis” sign does not have any signification in English or in French and is distinctive, thus, it refers directly and only to the Complainant’s Trademarks and company name. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name that combines reproduction of two registered trademarks in its entirety, including the Complainant’s Trademarks, unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant’s NATIXIS Trademarks.
The disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels have found that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
Furthermore, there is no active use of the Domain Name as it refers to an error page. In light of the lapse of time since its registration by the Respondent and the circumstances of the case, the Panel considers it is indicative of its intention to hold the Domain Name in bad faith. There are several cases, of which Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Novo Nordisk A/S v. CDMS Invest, WIPO Case No. D2012-0676 are an example, where the so called “passive holding” of a domain name has been held to constitute bad faith use within the meaning of paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <natixis-cyberplus.com>, be transferred to the Complainant.
Date: January 3, 2018